The Complainant is OLX, Inc. of New York, United States of America (the “USA”), represented by CSC - Corporation Service Company, Sweden.
The Respondent is Jose Antonio Silva Nunes of Tomar, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT S.p.a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2014. On July 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2014.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 4, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant OLX, Inc. is one of the world’s leading free online classifieds platforms and receives more than 100 million monthly unique users, generating over 1.8 billion monthly page views, or 60 million page views per day.
Since 2006, the Complainant owns several registrations / applications for the trademark OLX in the USA and in the European Union.
The Complainant also owns multiple domain names comprising the OLX trademark, including the domain name , registered on February 8, 1999.
The Respondent registered the disputed domain name on May 29, 2014.
The Panel accessed the website displayed at the disputed domain name on September 11, 2014, when it was linked to a webpage with no contents besides the reference (in Portuguese language) that the domain name ownership is under dispute. Previously, however, the disputed domain name was linked to a free online classifieds platform (Annex 12 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The Complainant is the sole owner of the OLX trademark at the European Union’s Office for Harmonization in the Internal Market (“OHIM”) and at the United States Patent and Trademark Office (“USPTO”). The former Trademark Office is located in the jurisdiction where the Respondent resides. The OLX mark and brand are well-recognized by consumers, industry peers, and the broader global community.
- The disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The dominant part of the disputed domain name comprises the term “olx,” which is identical to the Complainant’s famous OLX trademark. When comparing the disputed domain name to the Complainant’s OLX trademark, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the Complainant’s mark. The mere addition of the prefix “i” does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. The prefix “i” is simply a random letter that does not even make out a real term, making it even less likely to negate any confusing similarity between the disputed domain name and the Complainant’s trademark. Anyone viewing the disputed domain name is bound to mistake it for a name linked, associated, or affiliated with Complainant. By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and fame of the trademark, which may result in dilution and other damage to the Complainant’s trademark and brand. Past Panels addressing the use of the OLX trademark have found that the addition of generic words (such as “ad”, “ads”, or “repair”, as well as common numerals), to the full OLX trademark does not distinguish a disputed domain name from the Complainant’s famous mark, and that such domain names are confusingly similar to the OLX trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has not found anything that would suggest that the Respondent has been using OLX in any other way that would give them any legitimate rights in the name. The Respondent has not been commonly known by the disputed domain name. A respondent can not be considered as commonly known by a disputed domain name where there is no evidence on the record, including the WhoIs information, suggesting that respondent is commonly known by the disputed domain name. No license or authorization of any kind has been given by the Complainant to the Respondent to use the OLX trademark. The Respondent is currently using the disputed domain name to operate a commercial website, offering free advertisement and promoting several different products and brand names, as well as displaying links to numerous different products for sale and a link directing users to an adult website. Thus, the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website with sponsored links. By this, the Respondent is using the OLX trademark in order to mislead Internet users to a commercial website and consequently, the Respondent is tarnishing the trademark OLX.
- The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name on May 29, 2014, while the Complainant’s domain name , connected to the Complainant’s official website, was registered on February 8, 1999, being obvious that it was the fame of the OLX trademark that has motivated the Respondent to register the disputed domain name. The Complainant first tried to contact the Respondent on July 15, 2014, through a cease and desist letter sent by e-mail, but the efforts to solve this matter amicably were unsuccessful. Past panels have found that a respondent’s failure to respond to cease and desist letters indicates bad faith registration and use of a domain name. The disputed domain name is currently connected to a website which is commercial through sponsored ads, offering a similar online service as the Complainant. Moreover, a link directing users to an adult website is displayed on the website, clearly damaging the Complainant’s trademark. Whether or not the Respondent has influenced what links should be included on the website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the website himself. Displaying links to websites with adult content to an unrelated trademark can in some cases form a basis for finding bad faith according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Furthermore, the disputed domain name should be regarded as disrupting Complainant’s business and qualify as bad faith registration and use under Policy 4(b)(iii) since the disputed domain name fully incorporates the OLX trademark and is confusingly similar to this trademark. Consequently, the totality of the circumstances and facts dictate that the Respondent must be considered as possessing actual knowledge of the Complainant’s brand, business, and registered trademarks. Accordingly, the Respondent should be considered as having registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has no doubt that “olx” is a term directly connected with the Complainant’s activities in the field of online classifieds platforms.
Annex 6 to the Complaint demonstrates several registrations of the OLX trademark, obtained by the Complainant years before the registration of the disputed domain name.
The trademark OLX is wholly encompassed within the disputed domain name, which also includes the letter “i” at the beginning. The Panel concludes that the addition of this sole element is not sufficient to refute the confusing similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) from the Policy.
The addition of a generic Top-Level Domain (“gTLD”) such as “.info” is typically irrelevant when determining whether a disputed domain name is confusingly similar to a registered trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s OLX trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the website that was previously published at the disputed domain name consisted basically of a free online classifieds platform, in competition with the Complainant.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered on May 29, 2014, the trademark OLX was already associated with the Complainant’s activities in the free online classifieds business. Therefore, it is not feasible to this Panel that the Respondent could have been unaware of the Complainant’s reputation.
This conclusion is emphasized by the fact that until recently the disputed domain name had being used to host a free online classifieds platform in direct competition with the Complainant.
Therefore, in doing so, the Respondent:
(i) created a likelihood of confusion with the Complainant’s trademark;
(ii) most likely obtained click-through revenue from this practice; and
(iii) deprived the Complainant from attending prospective clients who are clearly looking for the Complainant.
The Respondent had the opportunity to justify why he has chosen the peculiar term “iolx” to register as the disputed domain name, but he preferred to keep silent.
It is true that at least presently the disputed domain name does not resolve to any active webpage. However, UDRP panels have frequently found that the apparent lack of so-called active use of a domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
The passive and non-collaborative posture of the Respondent, (a) not presently using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party trademark that is well-known in the field of online classifieds and registered in several countries, certainly cannot be used in benefit of the Respondent in this Panel’s opinion. Such circumstances, associated with (d) the lack of any plausible interpretation for the adoption of the expression “iolx” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: September 19, 2014
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